Poor Ben & Jerry Must Have Had A Rough Adolescence If They Think Ice Cream Can Be Confused With Porn

from the we-couldn't-make-this-stuff-up dept

I don't know about all of you, but thanks to Techdirt, one of the first things I think of when porn is brought up is trademark law. Okay, so that isn't even remotely true, but I have written about the convergence of those topics before. Back then, it was porn studio Vivid complaining that HTC calling one of their phones "The Vivid" was a trademark violation. They apparently thought the phone came with an app that (joke deleted due to extremely poor taste of the author).

But trademark complaints can flow in the opposite direction as well. Reader Will writes in about how Ben & Jerry's, the ice cream producer, is suing Rodax Distributors and Cabellero Video for trademark violations surrounding their DVD "Ben & Cherry's".

The trademark lawsuit in U.S. District Court in Manhattan said the sale of hardcore and exploitive pornographic DVDs and related goods is tarnishing Ben & Jerry's Homemade Inc.'s name by creating an association with pornography. It said the claims arise from the distribution and sale of a series of DVDs containing "exploitative, hardcore pornographic films" featuring titles and themes based on "well-known and iconic" Ben & Jerry's ice cream flavors as well as packaging that contains key company features such as a grazing cow, green grass and large white puffy clouds.

Yes, a cow eating its natural food below clouds is a key company feature. Even granting that, this is exactly how parody works. If you're making fun of something, which is what the pornographic movie purports to do (I haven't seen the video in question, only the cover, but I promise to do as much hands on research as possible), you're going to create a similar look and feel to whatever you're mocking. Porn has relied on parody protection in the past. I can understand why this might make Ben & Jerry's (BJs, if you like...) uncomfortable, but that doesn't make it actionable. Certainly it would be difficult to allege brand confusion, since no one in their right mind is going to think an ice cream company is going to dive into porn.

Even their complaints about the "names" of some of the film's stars should be covered by parody.

It identified some of the X-rated names similar to its own as "Boston Cream Thigh," "New York Fat & Chunky" and "Peanut Butter D-Cup." Ben & Jerry's has ice cream flavors titled: "Boston Cream Pie," "New York Super Fudge Chunk" and "Peanut Butter Cup."

Again, parody. And those names aren't even all that risque. In fact, I'd say they're about on par with names like "Schweddy Balls" and "Caramel Sutra", which are actual Ben & Jerry's flavors. Now, as of the time of this writing, a judge has issued a temporary restraining order (pdf) against the porn producers pending an appearance on September 12th to hear their side of things. In the meantime, I'll be awaiting the court's decision at home, while trying to determine whether the Chubby Hubby in my freezer is a tasty treat or a sex toy.

I think you're wrong about the law on this one.

The article seems to assume that without the possibility of confusion there isn't really a trademark issue here. That's simply not the case.

15 USC 1125(c)(1):

"Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury."

So, Timothy, either you're off on this point or you were just expressing some personal internal curiosities about frozen foods in a way that...ahem...seemed off.

While the cases cited above might appear at first glance to be factually analogous to the instant one, they are distinguishable for two reasons. First, they all involved unauthorized commercial uses of another's trademark. Second, none of those cases involved a defendant using a plaintiff's trademark as a vehicle for an editorial or artistic parody. In contrast to the cases cited, the instant defendant used plaintiff's mark solely for noncommercial purposes. Appellant's parody constitutes an editorial or artistic, rather than a commercial, use of plaintiff's mark. The article was labelled as “humor” and “parody” in the magazine's table of contents section; it took up two pages in a one-hundred-page issue; neither the article nor appellant's trademark was featured on the front or back cover of the magazine. Drake did not use Bean's mark to identify or promote goods or services to consumers; it never intended to market the “products” displayed in the parody.

Neither of those two things applies here. This case is more like the list of cites where the court shut down the use than it is like the case you cited where there was indeed parody. Here we have (1) commercial use, and (2) they aren't using the mark as a vehicle to make a comment about Ben & Jerry's.

I think the tarnishment argument is a winner, as did the judge who shut it down ex parte.

Re: Re: I think you're wrong about the law on this one.

Not at all.

I just don't think it has any bearing on the point I was making. The humor of the article, the back-of-the-eyeballs-tinglingly funny humor, rests on how stupid it is for Ben & Jerry's to file a trademark claim, because not even a moron in a hurry mistakes ice cream for XXXX. That's funny on it's own, but your execution was even better. Mike should pay you more for how funny that was.

So funny that my next thought was, man that's just too mean to be fair. And really, if there's another basis for their claim outside of the confusion factor, then it really isn't fair. I wasn't sure, and so I googled. It sure seems like the law is very clear that there is a basis for their claim, and so, your funny joke really doesn't seem fair or accurate here.

As for parody, I think it could be a legitimate defense, but whether or not it holds up doesn't affect that your joke wasn't fair. I like making fun of people, I'm not that good at it, so I like it even more when you make fun of people. But not unfairly.

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Re: I think you're wrong about the law on this one.

Last I heard, trademarks only apply when you're in the same business. So, as far as I understand, unless Ben and Jerry's do start to make their own porn vids, they shouldn't be able to do anything. There can only be dilution of their brand if someone is stupid enough to think B&J are in the porn business, which they're not.

Re: Re: Re: I think you're wrong about the law on this one.

Related? How? So if this were a case about a guy selling yoghurt with packaging similar to B&J ice-cream...
But it's not.

Average_joe...don't you ever think about what you write? You do have a point with it not having to be the exact same business...WHICH IS WHAT THIS ARTICLE IS ABOUT! Ben and Jerry's are NOT in the porn business. Ben and Cherry's are NOT in the ice-cream business. Thus, trademark law doesn't apply!

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A mark can cover a related market under the "Aunt Jemima doctrine." In that case, the mark for syrup covered pancake batter, even though Aunt Jemima didn't market batter. Lots of cases cite this principle. You missed the point though. I was correcting you that infringement has to be in the "same" business. It doesn't. It can be a related business. But that's irrelevant here where (I think; I couldn't find the complaint on PACER or Google) the issue is dilution by tarnishment. With dilution, it's almost always (or even always? not sure) the case that the junior user is in a different market. The issue isn't whether a consumer would think that Ben & Jerry's had gotten into the porn business. The issue is whether the porn business using the Ben & Jerry's marks is doing damage to the marks by tarnishing them in the public's mind. As Mike's post indicates, some people don't like the theory. There's lots of ink arguing both sides.

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"Average_joe...don't you ever think about what you write?"

Dude, really? I mean, at certain times (other times, not so much), I've found his comments to be glib, overstated, rapaciously smug, and just downright detestably wrong, but the ONE THING the guy does is friggin' think about what he writes.

I've also seen him concede a counterpoint and admit when he's wrong. It wasn't in response to ALLCAPS.

Re: Re: I think you're wrong about the law on this one.

Re: I think you're wrong about the law on this one.

The article seems to assume that without the possibility of confusion there isn't really a trademark issue here. That's simply not the case.

I won't speak for Tim... and I will admit (as I have in the past) that I find the (relatively recent) addition of "dilution" to trademark law as a complete bastardization of the purpose of trademark law.

But... even so, I fail to see how this has even a slightly dilutionary effect on Ben & Jerry's. Is someone somehow going to think less of Ben & Jerry's ice cream because of this? I can't see how that's likely at all. It doesn't "tarnish" the brand. It's a parody, a joke.

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The harm is reputational. By linking the wholesomeness of Ben & Jerry's to the unwholesomeness of Ben & Cherry's in the consumers' minds, the brand is tarnished. I think the way it's proved is through consumer surveys. As Mr. Levy notes, in porn cases the plaintiff usually succeeds on a tarnishment claim.

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Your reputation is based on your actions, not the actions of others. B&J's played no part in the creation of the movies' names, so I find it hard to fathom how anyone can place any blame on them. Personally, this parody names have absolutely zero impact on my opinion of B&J's as a company or a product. However getting all pissy and sending C&D's certainly doesn't improve my opinion of them.

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Re: Re: I think you're wrong about the law on this one.

I won't speak for Tim... and I will admit (as I have in the past) that I find the (relatively recent) addition of "dilution" to trademark law as a complete bastardization of the purpose of trademark law.

The idea started with Schechter's article in the Harvard Law Review in 1927 where he argued that distinctiveness was being diluted by a mark's use on unrelated goods, so it's been around for a while. I'm curious though what you mean that it's a "complete bastardization of the purpose of trademark law." Trademark law has more than one purpose. I know you focus on consumer confusion, which is no doubt the main purpose of trademark law, but there's more to it than that.

I'm not sure if you've read Posner's exploration on dilution. It speaks to the economics, so you might enjoy it:

The fundamental purpose of a trademark is to reduce consumer search costs by providing a concise and unequivocal identifier of the particular source of particular goods. The consumer who knows at a glance whose brand he is being asked to buy knows whom to hold responsible if the brand disappoints and whose product to buy in the future if the brand pleases. This in turn gives producers an incentive to maintain high and uniform quality, since otherwise the investment in their trademark may be lost as customers turn away in disappointment from the brand. A successful brand, however, creates an incentive in unsuccessful competitors to pass off their inferior brand as the successful brand by adopting a confusingly similar trademark, in effect appropriating the goodwill created by the producer of the successful brand. The traditional and still central concern of trademark law is to provide remedies against this practice.

Confusion is not a factor here, however, with a minor exception discussed at the end of the opinion. Perryman is not a competing producer of beanbag stuffed animals, *511 and her Web site clearly disclaims any affiliation with Ty. But that does not get her off the hook. The reason is that state and now federal law also provides a remedy against the “dilution” of a trademark, though as noted at the outset of this opinion the federal statute is limited to the subset of “famous” trademarks and to dilutions of them caused by commercial uses that take place in interstate or foreign commerce. “Beanie Babies,” and “Beanies” as the shortened form, are famous trademarks in the ordinary sense of the term: “everybody has heard of them”; they are “truly prominent and renowned,” in the words of Professor McCarthy, 4 McCarthy on Trademarks and Unfair Competition § 24:109, p. 24–234 (2001), as distinguished from having a merely local celebrity. TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 98–99 (2d Cir.2001). And while both this court and the Third Circuit have held, in opposition to the Second Circuit's TCPIP decision, that “fame,” though it cannot be local, may be limited to “niche” markets, Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 640–41 (7th Cir.1999); Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 164 (3d Cir.2000), this is not a conflict to worry over here; Ty's trademarks are household words. And Perryman's use of these words was commercial in nature and took place in interstate commerce, and doubtless, given the reach of the aptly named World Wide Web, in foreign commerce as well.

But what is “dilution”? There are (at least) three possibilities relevant to this case, each defined by a different underlying concern. First, there is concern that consumer search costs will rise if a trademark becomes associated with a variety of unrelated products. Suppose an upscale restaurant calls itself “Tiffany.” There is little danger that the consuming public will think it's dealing with a branch of the Tiffany jewelry store if it patronizes this restaurant. But when consumers next see the name “Tiffany” they may think about both the restaurant and the jewelry store, and if so the efficacy of the name as an identifier of the store will be diminished. Consumers will have to think harder—incur as it were a higher imagination cost—to recognize the name as the name of the store. Exxon Corp. v. Exxene Corp., 696 F.2d 544, 549–50 (7th Cir.1982); cf. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1031 (2d Cir.1989) (“The [legislative] history [of New York's antidilution statute] disclosed a need for legislation to prevent such ‘hypothetical anomalies' as ‘Dupont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns' ”); 4 McCarthy on Trademarks and Unfair Competition, supra, § 24:68, pp. 24–120 to 24–121. So “blurring” is one form of dilution.

Now suppose that the “restaurant” that adopts the name “Tiffany” is actually a striptease joint. Again, and indeed even more certainly than in the previous case, consumers will not think the striptease joint under common ownership with the jewelry store. But because of the inveterate tendency of the human mind to proceed by association, every time they think of the word “Tiffany” their image of the fancy jewelry store will be tarnished by the association of the word with the strip joint. Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 507 (2d Cir.1996); 4 McCarthy on Trademarks and Unfair Competition, supra, § 24:95, pp. 24–195, 24–198. So “tarnishment” is a second form of dilution. Analytically it is a subset of blurring, since it reduces the distinctness of the trademark as a signifier of the trademarked product or service. *512

Third, and most far-reaching in its implications for the scope of the concept of dilution, there is a possible concern with situations in which, though there is neither blurring nor tarnishment, someone is still taking a free ride on the investment of the trademark owner in the trademark. Suppose the “Tiffany” restaurant in our first hypothetical example is located in Kuala Lumpur and though the people who patronize it (it is upscale) have heard of the Tiffany jewelry store, none of them is ever going to buy anything there, so that the efficacy of the trademark as an identifier will not be impaired. If appropriation of Tiffany's aura is nevertheless forbidden by an expansive concept of dilution, the benefits of the jewelry store's investment in creating a famous name will be, as economists say, “internalized”—that is, Tiffany will realize the full benefits of the investment rather than sharing those benefits with others—and as a result the amount of investing in creating a prestigious name will rise.

But... even so, I fail to see how this has even a slightly dilutionary effect on Ben & Jerry's. Is someone somehow going to think less of Ben & Jerry's ice cream because of this? I can't see how that's likely at all. It doesn't "tarnish" the brand. It's a parody, a joke.

It tarnishes the brand by associating pornography with it. I don't blame Ben & Jerry's for not wanting to be associated with hardcore porn. And the First Amendment argument is less forceful when the alleged infringer is clearly just riding on their coattails for commercial purposes. This isn't core, protected speech.. They aren't making a statement about Ben & Jerry's. They're trying to trade off of Ben & Jerry's goodwill at the expense of Ben & Jerry's goodwill.

Re: Re: Re: I think you're wrong about the law on this one.

That's a very lucid and well reasoned way to say "The law must assume that all member of the public are total morons completely incapable of distinguising one thing from another without being spoon-fed by corporations"

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If that's your takeaway from that quote, I question your comprehension skills.

Really? Why?

Now suppose that the “restaurant” that adopts the name “Tiffany” is actually a striptease joint. Again, and indeed even more certainly than in the previous case, consumers will not think the striptease joint under common ownership with the jewelry store. But because of the inveterate tendency of the human mind to proceed by association, every time they think of the word “Tiffany” their image of the fancy jewelry store will be tarnished by the association of the word with the strip joint.

That suggests that I as as consumer am incapable of associating a single word or name with 2 separate concepts and realising the difference. How would you read it?

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"consumers will not think the striptease joint under common ownership with the jewelry store"

That is the exact opposite of an inability to recognize the difference.

The tarnishment is not based on an "incapab[ility] of distinguising one thing from another." The Posner quote explicitly states as much.

Rather, it's based on (a) simply increasing (perhaps by a minimal amount) the "imagination cost" in making the distinction, although nobody questions the average consumer's ability to do so, and (b) the likely raising of the tarnishing concept/brand/activity in the consumer's mind when the tarnished concept/brand/activity is raised. This second part actually depends entirely on the consumer being able to hold two distinct concepts in their brain at the same time.

I'm not a big fan of dilution law, but arguing that it depends on consumers' supposed inability to distinguish two things is hogwash.

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"consumers will not think the striptease joint under common ownership with the jewelry store"
That is the exact opposite of an inability to recognize the difference.

I was referring not to the difference between the physical objects but to the difference between the 2 thought-associations for the individual. Perhaps I'm odd, but even on the off chance that when I next go for a B&J icecream (which commonly used acronym is waaaay more likely to cause a "hur! hur! He said BJ!" reaction than a porn film with similar names IMO) I think of the porn film I'm capable of holding that thought completely separate in my mind from a decision to buy icecream.

The same is true of any other product that happens to have a similar name but completely different function. Somewhat co-incidentally I did once meet a stripper called Tiffany and I can say it has had exactly zero "tarnishing" effect on the jewellery brand. Nor does the number of splinters I've had stuck in various parts of my body over the years tarnish my image of Tom Clancy's Splinter Cell and I know a couple of people terrified of spiders who liked the Spiderman films (though god knows why).

Since I don't believe I have some unique ability to hold my thought processes seperate in this way, I'm struggling to see how this "tarnishing" effect that the law describes could cause any significant "harm" (presumably to change a purchasing decision) in anyone of normal cognitive function.

Re: Re: Re: Re: I think you're wrong about the law on this one.

hat's a very lucid and well reasoned way to say "The law must assume that all member of the public are total morons completely incapable of distinguising one thing from another without being spoon-fed by corporations"

Me, I find that a rather sad.

The point isn't whether the public can tell the goods apart (that's consumer confusion, which is not the issue in dilution), the point is whether the brand is harmed by the diluting use. I think something that neither you nor Mike is considering that protecting a mark doesn't mean the public is harmed in the process. It's not a zero sum game. Don't make the knee-jerk reaction that stronger rights for the mark holder equates to making the public worse off. I don't think that's how it works.

Re: Re: Re: Re: Re: I think you're wrong about the law on this one.

That is indeed the point, one which you have providing zero evidence or explanation of. Instead of cutting and pasting swathes of text, why don't you explain how Ben & Jerry's are harmed?

"Don't make the knee-jerk reaction that stronger rights for the mark holder equates to making the public worse off."

Many people would be amused and entertained by the parody names, which is their whole point. If the names were successfully prevented from being used, fewer people would see them and be entertained, meaning they are by definition worse off.

Re: Re: Re: Re: Re: Re: I think you're wrong about the law on this one.

That is indeed the point, one which you have providing zero evidence or explanation of. Instead of cutting and pasting swathes of text, why don't you explain how Ben & Jerry's are harmed?

You expect me to prove the case without having all the facts. You think I have access to the facts needed to prove that this use harms Ben & Jerrys. LOL! I can tell you the theory and the law, and I can explain how I think the theory and the law might apply here (as I've already done), but the proof would come from surveys. Note too that you can't prove that this doesn't harm Ben & Jerry's.

Many people would be amused and entertained by the parody names, which is their whole point. If the names were successfully prevented from being used, fewer people would see them and be entertained, meaning they are by definition worse off.

The whole point, as far as I can tell, is for Ben & Cherry's to ride the coattails and to make money from and at the expense of Ben & Jerry's. As I've shown elsewhere in this thread, the parody defense is not even available since the use is commercial. The law balances the First Amendment and rightholders' concerns. You appear to think that no balance is needed and we should always favor free speech over rightholders. First of all, it's commercial use so the First Amendment concerns are not full force. Second of all, protecting the rightholders actually protects the public.

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"...the parody defense is not even available since the use is commercial". Isn't most parody commercial? Weird Al, ApologetiX, "Mad" magazine, etc.?

Weird Al, I would think, would be able to use the parody defense, but in the copyright context. Different deal entirely. Not sure what ApologetiX is. Mad Magazine, insofar as the issue is trademark, isn't using the parody of a mark as a mark. In other words, they aren't selling their goods using the parody mark to identify their own goods. Their goods are still identified as "Mad Magazine." Contrast that to the situation you have here, where Ben & Cherry's is using the parody to identify their own line of goods, the Ben & Cherry's videos. (Hope that helps. I've been studying all day and I'm fried at the moment, so sorry if it's unclear.)

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ApologetiX is a parody band. They're kind of like Weird Al (in fact, Weird Al's drummer played on one of their albums). They are excellent. If you like parody music, you should check 'em out. Their official website is: http://www.apologetix.com

A couple of points about average joe's comments

It is not correct that the parody defense is not available when the use is non-commercial. Non-commercial use is ONE defense to a dilution claim (subsection 3(B)). "Fair use . . . including . . . parody" is a separate defense per subsection 3(A).

Also I said only that tarnishment claims frequently succeed when a mark is associate with porn; "usually" seems to me a bit strong. LL Bean nevertheless lost its dilution suit against a High Society parody that overflowed with nude models; and although the Second Circuit gave the Dallas Cowboys a win against the porn film "Debbie Does Dallas" it is not at all clear that the result would be the same today.

The public ought to be able to hold Judge Kaplan accountable for his orders in this case, and the only way to do that is to see exactly what BJ argued, and what evidence it presented. His allowing the sealing of the images over which suits has been filed -- and indeed the non-filing of the moving papers in this case (including whatever arguments may have been made for the sealing) -- is disturbing. Sealing order is here: http://www.scribd.com/doc/105327851. I was, though, heartened to see his warning that he might ultimately decide differently in light of the public right of access to judicial records, which is particularly strong in the Second Circuit.

Re: Re: A couple of points about average joe's comments

You are right to point out that I mistyped, but not to argue that "the parody defense is not even available since the use is commercial." These are separate defenses (or exclusions, in the language of the statute). Unless the fair use defense, including parody, is purely duplicative (and we try to avoid construing statutes that way), it must be available in situations where "noncommercial use" is not a sound defense -- that is, is cases of commercial use.

Re: Re: Re: A couple of points about average joe's comments

You are right to point out that I mistyped, but not to argue that "the parody defense is not even available since the use is commercial." These are separate defenses (or exclusions, in the language of the statute). Unless the fair use defense, including parody, is purely duplicative (and we try to avoid construing statutes that way), it must be available in situations where "noncommercial use" is not a sound defense -- that is, is cases of commercial use.

To be sure, sometimes BOTH defenses apply.

I think I get your point. At first I said the parody defense is not available when it's being used as a mark. That's right in the statute, which provides:

(3) Exclusions

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.

15 U.S.C.A. § 1125(c)(3) (West 2012) (emphasis added).

So I'm correct to say that the parody defense is not available for Ben & Cherry's since they are using it as a mark, i.e., as a source identifier. (They are also using it commercially, but that's irrelevant here.)

But then in my later post, I said that the parody defense it's not available when it's commercial use. In my mind, using it as a mark means using it commercially, so I was (purposefully) conflating the two. But the statute only says the defense is not available when it's used as a mark. It doesn't say the defense is not available when it's commercial use. So I suppose you could have a situation where the use is not as a mark but is commercial, and there the defense would be available.

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And my point is that I am capable of simultaneously seeing the similarities of the pardody and realising that the one has nothing to do with the other.... if I fancy an ice-cream there is exactly zero chance of me thinking "Well I was going to buy a Ben & Jerry's but since someone once made a porn film about it I won't now.". This is, I hope, true of most rational humans and so I find it rather sad that there appears to be legislation that assumes the opposite.

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"And my point is that I am capable of simultaneously seeing the similarities of the pardody and realising that the one has nothing to do with the other...."

Nobody is disputing that. I don't know how many times he or anyone else needs to clarify that.

The theory is NOT that people will be confused into thinking one is affiliated with the other.

The theory is that (a) the brand slightly less able to serve a distinguishing function (not incapable) with each additional unaffiliated use of the brand, and (b) the use of the brand with unsavory material causes consumers to think of the unsavory stuff when they see the original brand (though they are not confused about any affiliation).

I think it's true that this probably (at least in some cases) causes some harm to the brand owner. That doesn't mean it should be a legitimate claim, though. But, under the law as it currently stands, it is a legitimate legal claim.

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That doesn't mean it should be a legitimate claim, though. But, under the law as it currently stands, it is a legitimate legal claim.Yes, and that's exactly what saddens me - that "harm" can be claimed (presumably monetarily since US law usually seems to work that way) and expression (whether interesting or not) suppressed on the basis of a law based on people having the reasoning power of a bowl of porridge. My opionion is that whether or not some small portion of the populous do have the reasoning power of hot cereal it's no way to write law. I wasn't asking anyone else to share my opinion, nor was I suggesting it wasn't a law, I was simply commenting that I find laws based on "lowest common denominator" to be disturbing.

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fair enough.... would you care to explain why? My personal experience (OK those are slightly facetious examples by hopefully you get the point) suggests that such a "negative association" has no effect on my purchasing and brand decisions. I honestly can't see anyone deciding not to, for example, read Harry Potter because there's a spoof porn film of it (which AFAIK there is...).

In the absence of a change in a purchasing decision I don't see any harm. So if you (or anyone else.. AJ seems to be of a similar mind as you) have a different thought process that you think does affect purchasing decisions, or creates some other harm beyond a nebulous "ooo it's got a similar name and it's... icky!" I'd be genuinely interested to hear.

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So, I don't think you have to have any diminished mental capacity for one thing to "call to mind" something else.

If Brand X sausages are a very famous brand of delicious sausage, and someone starts selling Brand X laxatives, an intelligent person may not be confused as to actual affiliation between the parties. However, an intelligent person may nevertheless have laxatives (and the not-so-appetizing result) called to mind the next time he sees Brand X sausages.

I think that would constitutes one example of dilution that does not depend on the consumer being a moron (and may actually cause actual harm).

If Brand X sausages are a very famous brand of delicious sausage, and someone starts selling Brand X laxatives,

Yeah.. I'd hate to have my favorite laxatives tarnished by the image of sausages.. you have any idea what goes into those things???
Seriously, this has to be the weakest argument for a law I think I've ever seen - basically the argument seems to be that you can resrict on the basis of something that might happen in some small number of people's minds where they have free will to associate as they please and could choose to associate literally anything with a product. And this basically on the basis that once company got here first in a completely unrelated field?
Under that argument almost anything could be tarnishment. Even before you get into how people's minds can freely associate the strangest things for all sorts of reasons there are enough brands globally that you couldn't avoid it.... take the brand Durex for example - firmly associated with condoms in the UK and with sticky tape in Australia. Tarnishment? Which way? "Oh I don't want one of those sticking to my percy when I try and put it on" or "Ew, I'm not wrapping a parcel for my grandmother with THAT"?
Or does the woollen goods shop in Scotland get to sue the fast food chain McDonalds for tarnishment of their brand since they got there first (by a hundred years or so I understand) and probably don't care to be associated with such a horrible thing as bad fast food?

Which brings me back to:

However, an intelligent person may nevertheless have laxatives (and the not-so-appetizing result) called to mind the next time he sees Brand X sausages.

Called to mind is very different from "changed a purchasing decision".
In your hypothetical example, what percentage of people of, oh let's say, 85IQ or above would you imagine would decide not to buy the well known X-sausages because they also know there's a laxative of the same name?
For bonus points, what percentage of those people who already ate the apparantly very popular fat-coated offal tubes do you imagine would change their habits on the basis of this?

Re: Re: Re: Re: I think you're wrong about the law on this one.

"That's a very lucid and well reasoned way to say 'The law must assume that all member of the public are total morons completely incapable of distinguising one thing from another without being spoon-fed by corporations'"

No, it's a very lucid and well reasoned way to say "The core purpose of trademark is to help a moron in a hurry make a useful, quick gut-feeling decision based on prior associations with the brand mark"

If the gut-level sweet yummy feelings associated with a yummy dessert have too much ahemcoughsalad tossed in that breaks the trademark.

Re: Re: Re: Re: Re: Re: Re: I think you're wrong about the law on this one.

Trademark itself sure - its original intent of confusion is at least somewhat valid. Personally I think the bar is set way to low (or more likely, rather than assuming people can't tell the difference I think the assumed "moron level" is the law biased in favour of large established organisations), but whatever. At least there's some basis for confusion and some potential "harm" of the customer buying another brand when they thought it was yours. But this? Dilution and "tarnishing"?

Almost everyone in the thread seems to agree we're not talking about anyone confusing any kind of association between the 2 products so in your scenario of the arore-mentioned "moron in a hurry" (who apparently isn't really a moron), explain the need for a law that protects against the thought process that goes;
"Well I've been eating Ben and Jerry's Icecream for years and I know I like it, but now I know someone completely not associated with them made a porn film I can't possibly buy from them again"
or even
"Hmmm I fancy an icecream, look there's a Ben & Jerry's and a Haagen Dazs next to each other hmmm I heard both are great icecream. Oh but wait, I heard someone else once made a pornfilm with names like B&J's flavours... guess it's Haagen Dazs then"

Or, as someone else mentioned for this case, even on the infinitessimal chance that such an loose association with sex might play some tiny part in putting someone off (I dunno, how many religions or cultures with strict sex taboos eat icecream?), what's the difference in sexual association between "Peanut Butter D-Cup" and "Karamel Sutra"?

Re: Re: Re: I think you're wrong about the law on this one.

That's very interesting and I never thought of dilution of trademark in these terms, but I still don't think it really applies here. Let's take the core argument in bold:

But because of the inveterate tendency of the human mind to proceed by association, every time they think of the word “Tiffany” their image of the fancy jewelry store will be tarnished by the association of the word with the strip joint.

Makes sense in the Tiffany example, but less so in the Ben & Cherry's case. First of all, because they slightly change the names (including the product names) it is clear that it is meant to be a parody, so when you see the actual "Ben & Jerry" name it is less likely that you think of the porno you recently saw and much less likely that you need to put in any mental effort in figuring out which brand it refers to. Now, if there was a "Ben & Jerry's" advertising in the local paper that's actually an Escort Service, that dilution by tarnishment argument would be much more straight forward. I think by simply having changed the names they'll probably be ok with a parody defense.

Re: Re: Re: Re: I think you're wrong about the law on this one.

The fair use/parody defense is codified in the TDRA:

(3) Exclusions

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with--

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

15 U.S.C. 1125(c)(3)(A).

The key is to note that the defense is not available when parodies are used as a mark. The "Chewy Vuitton" case makes this point:

We begin by noting that parody is not automatically a complete defense to a claim of dilution by blurring where the defendant uses the parody as its own designation of source, i.e., as a trademark. Although the TDRA does provide that fair use is a complete defense and allows that a parody can be considered fair use, it does not extend the fair use defense to parodies used as a trademark. As the statute provides:

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use ... other than as a designation of source for the person's own goods or services, including use in connection with ... parodying....

15 U.S.C.A. § 1125(c)(3)(A)(ii) (emphasis added). Under the statute's plain language, parodying a famous mark is protected by the fair use defense only if the parody is not “a designation of source for the person's own goods or services.”

The TDRA, however, does not require a court to ignore the existence of a parody that is used as a trademark, and it does not preclude a court from considering parody as part of the circumstances to be considered for determining whether the *267 plaintiff has made out a claim for dilution by blurring. Indeed, the statute permits a court to consider “all relevant factors,” including the six factors supplied in § 1125(c)(2)(B).

From what I understand, the porn defendants are issuing the film series under the "Ben & Cherry's" mark. If so, the parody defense is not even available. That doesn't mean it's necessarily diluting, though. You have to do that analysis separately.

Re: Re: I think you're wrong about the law on this one.

Mike, I agree with much of what you say and/or suggest here. I think there are some real problems with Ben & Jerry's case. I didn't raise the point to wave their flag (at least not in a legal sense, I personally have passed up sex for a little Chunky Monkey).

For one, I don't think an offending work requires very much tastefulness or artly quality at all to overcome a tarnishment complaint is if bears a real and actual free speech parody claim. Further, their own use of sexual brand associations, which Tim did well to note, raises a legitimate blue on black question for me.

With respect to this though, there's a lot to consider. Even in view of Ben & Jerry's sexed up brand choices, their own vague implication of some similarity between sexual desire and ice cream craving is probably beneficial to their rep. Whereas if the porn in question served to strongly associate explicit graphic images of an unsavory nature with their brand, you'd better believe that there COULD be actual harm in such an instance.

Mike I know you said you couldn't see how this could be tarnishment, but if a food brand's distinctive name unavoidably triggers vivid images that turn your stomach, that's gonna have actual impact.

Ultimately, I think the tarnishment vs parody battle really does come down to a matter of degree. It has to---on both sides of the spoon. Consider the extremes for each.

Parody: IF the only element of parody is the name itself, I don't see it standing up to a strong tarnishment claim. The reason is that in such a case the only potentially protect-able speech message happens to be a one to one intersection with the tarnishment itself. This is somewhat hard to explain, but consider a hypothetical:

A video named Hairy Garcia (set aside for the moment the irony of this already being a borrowed name) which has no other element of parody and simply shows a lonely housewife ordering pizza and then having a graphic hoedown with a completely hairless pizza guy. Nevermind the totally unforgiveable false advertising, the only real parody there is the homophonics in the title, which really only serves to abuse the Ben & Jerry's trademark for some extra attention and marketing while piling an extra drizzling of nasty on top of their ice cream name.

However, the very instant you leave that extreme, from there on, the marginal parody value required for free speech protection drops off sharp. The free speech imperative there forward, becomes increasingly difficult to ignore. Might it even be enough if said housewife asks said pizza guy to pickup ice cream on the way?

No, it's not very much of a parody message at all, but it extends beyond just simply rubbing their name and face in the private video world, and even that middling, tawdry scrap of free speech requires at the least some real consideration for protection.

On the far other end of the scale, I can think of (though I wish I hadn't) plenty of scenarios (yes, those kind of scenarios) which would have an almost undeniable legitimately defensible parody claim, even if otherwise utterly and completely tasteless AND even if somewhat tarnishing.

If the basic idea of the video was something as simple as a graphic presentation of the creator's own ice-cream infused fantasies where the basic porn product is visually merged with visions of whatever the flavor, so that the message is nothing more than a simple "Ice cream makes me...'hungry'", then yeah that's full on, actual parody. Shouldn't that be protected no matter how much the Dairy-Duo dislike it?

Tarnishment: In the same way, the tarnishment issue could vary in degree and it's important (uncomfortably so) to consider what degree of tarnishment is harmful enough to limit what degree of parody claim and vice versa.

Take again their use of sex branding. It's one thing for Ben & Jerry to capitalize on a vague implication of sexual ecstasy when naming their flavors. It's something else entirely for an otherwise non-parody use of their trademark name to be chanted repeatedly with an extreme, increasinly anxious tension in association with images so graphic and detailed that no parent could ever feel comfortable serving said flavor for, or even be seen perusing the label in front of their child. That's harm-tarnshised on every stinkin' surface.

Damn, I mean don't think of them now, but later, when you've got some nice and safe VANILLA in front of you, man think of the CHILDREN!!

Now then again, there's the fact that Ben & Jerry's already uses a far-from-vague, highly sensory, multi-sensory brand name with specific imagery of a sexual nature.

I mean damn! You just CAN'T MAKE a Schweddy tarnishment claim. There's simply no getting away from the already heavily loaded, forcefully instant poetic thrust of the Schweddy Balls.

What IF ANY tarnishing harm is really done if a video producer simply composes a visual interpretation of exactly that which the sound of the name unavoidably bounces into the average, questionably a-dult mind?

All that said, at this point it seems sufficient to me that both sides have at least some basis for their claims and it really should have a hearing before a judge, poor wretched soul that would be.

Disclosures: I'm admittedly somewhat biased in favor of the ice-cream on the temporary injuction. I'm slightly more okay with it when the chilling effects are applied to perfectly smooth and creamy sweetened butterfat. But upon hearing, if they prove up any actual parody, honestly I'd be pretty stumped.

Re: Re: Re: I think you're wrong about the law on this one.

What are the chances of anyone whose stomach is turned by porn actually seeing this movie? Have you ever accidentally watched a porn film without realizing it was something that disgusted you? If I heard someone was doing something I find disgusting using parody of a brand I like, I'd be more likely to buy that brand to show support, not less. Maybe that's just me?

Re: Re: I think you're wrong about the law on this one.

Well, the problem here is that the uber right wing family groups and Christian groups could theoretically learn about this, fail to do proper research (which they are known for), and then start boycotting Ben & Jerry's under the false assumption that they are in fact producing porn. (Frankly I would be surprised if there wasn't ice cream smoosh porn out there somewhere.) I can vaguely recall something like this happening in the past with some other company or personage but no specific examples spring to mind.

Re:

Actually I was just thinking that as I scrolled down. I was also thinking that I hadn't heard anything about Ben & Jerry's in a long time, and if they played this right it could go very well for them, but I don't think they're playing it right.

It also occurred to me that a lot of people eat ice cream while watching movies, and there is always the question of which is the right flavor for a film? This movie company has made it easy for their viewers- it's something from B&J's. B&J should appreciate their effort, if anything.

B&J's should also appreciate the flavors that weren't turned into movies, including (use your imagination for what these movies would be like):
Red Velvet Cake
Dublin Mudslide
Banana Split
Dave Matthews Band Magic Brownies Encore Edition
Stephen Colbert's Americone Dream
What A Cluster
... (could go on but thinking about the Colbert one has turned me off to both movies and ice cream for a while...)

Re:

Apparently no one else sees this as just being an easy way for Ben and Jerry's to get a lot of free publicity

Is that on the "no publicity is bad publicity" theory? Coz I have to say, even if B&J themselves had made the porn film it would likely have no effect on my purchasing decision for icecream. A company acting like a bullying twat for no good reason I can see on the other hand does have some chance of doing no matter who they are attacking.

Dilution, not infringement

The article is a bit unclear, and the complaint is not available on PACER; indeed, the judge has entered an order sealing some of the materials that were apparently presented to him in support of the complaint. So it is hard to make any independent judgments about the veracity of the article.

That said, this strikes me as a dilution case involving a claim of tarnishment. If so, there is no obligation to show confusion and, in fact, lack of confusion would be irrelevant. I am no friend of the dilution cause of action, but historically, the one area in which trademark plaintiffs frequently succeed in arguing tarnishment are the cases in which a defendant, and especially a commercial defendant, associates a trademark with either pornography or narcotics use.

The fact that the defendant makes a parody claim might or might not make the defense litigable. One would have to look at the product to make a judgment about whether this is really a parody or just an effort to exploit a trademark to sell a pornographic film.

That said, considering that this is a TRO against a movie, there are some very disturbing questions that come to mind. PACER not only does not contain the complaint; although the TRO recites that there were declarations, the docket does not reflect any such documents having been filed. The TRO says nothing about what efforts were made to give the defendants notice and an opportunity to be heard, and why the judge was justified in issuing a TRO without notice, if in fact there was no notice (Rule 65(b)(2) expressly requires such a recitation). The case was filed September 5, and the judge entered the TRO on September 6. It would be nice to see some explanation of why the plaintiff was entitled to get such quick action, possibly before defendants had the opportunity to present an opposition.

Re: Dilution, not infringement

That said, considering that this is a TRO against a movie, there are some very disturbing questions that come to mind. PACER not only does not contain the complaint; although the TRO recites that there were declarations, the docket does not reflect any such documents having been filed. The TRO says nothing about what efforts were made to give the defendants notice and an opportunity to be heard, and why the judge was justified in issuing a TRO without notice, if in fact there was no notice (Rule 65(b)(2) expressly requires such a recitation). The case was filed September 5, and the judge entered the TRO on September 6. It would be nice to see some explanation of why the plaintiff was entitled to get such quick action, possibly before defendants had the opportunity to present an opposition.

I noticed that too (except for the 65(b)(2) thing; nice catch), and I thought it was funny that Tim (the author of this article) was so focused on consumer confusion (which isn't really the issue) that he missed the First Amendment and due process issues. Where's the cries of prior restraint and due process?

Update

Ben & Jerry's has won a temporary injunction against Caballero. If a permanent injunction is issued, it could result in the recall of all the DVDs in that line. Of course, the movies will still be floating around in cyberspace for anyone who wants to download them.